Tag Archives: patent filing india

In order to obtain a patent in India, the invention should not be disclosed in the public domain prior to filing of a patent application. The link provided below gives a clear understanding that relates to publishing an invention prior to filing the patent application.

Few exceptions are provided in the Indian Patent Act under which the patent application can be filed despite public disclosure, and such public disclosure will not be considered to have been anticipated.

1. Anticipation by previous publication (Sec. 29)

2. Anticipation by previous communication to the government (Sec. 30)

3. Anticipation by public display (Sec. 31)

4. Anticipation by public working (Sec. 32)

5. Anticipation by use and publication after provisional specification (Sec. 33)

Anticipation by previous publication (Sec 29)

A complete specification filed shall not be deemed to have been anticipated if the invention has been published prior to filing of the patent application, if the applicant or the patentee proves that the matter published was obtained from him or any person from whom he derives title without his consent or the consent of any such person.

Anticipation by previous communication to the government (Sec 30)

A complete specification filed shall not be deemed to have been anticipated if the invention has been communicated to the government or any person authorised by the government for the purpose of investigation of the invention.

Anticipation by public display (Sec 31)

A complete specification shall not be deemed to have been anticipated if:

the invention has been displayed in an exhibition to which the provisions of the instant section has been extended by the Central Government; or

the invention is described in a publication in consequence of display of the invention in such an exhibition; or

the invention has been used by any person without the consent of the true and first inventor or a person deriving title from him after it has been displayed in such an exhibition; or

disclosing the invention before a learned society or publishing the invention in the transaction of such society;

provided the application is filed within 12 months from aforementioned public display.

Anticipation by public working (sec 32)

A complete specification shall not be deemed to have been anticipated if the invention has been filed within 12 months after the invention has been publicly worked for the purpose of reasonable trial considering the nature of the invention.

Anticipation by use and publication after provisional specification (sec 33)

A complete specification shall not be deemed to have been anticipated if the invention has been used and published after filing a provisional application.

In conclusion, ideally one should file a patent application before publicly disclosing the invention. However, if a public disclosure is made before filing a patent application, then one can still contemplate patent application filing in light of the provisions discussed above.

I hope you found this article helpful.

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Over the years I have noticed that inventors seek patent filing related advice at various stages of the inventing process. At one extreme, I have seen inventors exploring the option of filing a patent application at an ideation stage. On the other hand, I have also come across inventors who explore the patent filing option after bringing the invention to public domain. Given the wide gap between the two extremes, I intend to provide some information through this article to help inventors decide an ideal time to apply for a patent.

Before we dive right into the question of interest, let us try to understand the concept behind the patent system. The patent system is essentially designed to encourage advancement in science and technology. To provide such an encouragement, respective countries provide monopoly right over the patent invention for a limited period of time, to the inventors or the assignees of the patent. In return, the patent office expects the applicant of a patent to disclose information about the invention for which patent protection is sought, to an extent that a person with ordinary skill in the technology, to which the proposed invention relates, can use the provided information to make and use the proposed invention. This disclosure of information to the public would ideally enable others to explore improvements over existing technology, and thereby lead to advancement in science and technology.

The disclosure of information discussed above is one of the requirements, which has to be fulfilled to have a patent granted. Hence, one of the important questions that inventors should ask themselves is whether they have sufficient information about the invention to enable a person skilled in the technology to which the invention relates, to make and use the proposed invention. If sufficient information is available, then the time might be right to apply for a patent. One the other hand, if sufficient information is not available, then the inventor should ideally work towards gathering/generating such information, so that the same can be provided in the patent application.

Generally the issue of not having sufficient information arises when option of patenting is explored at an ideation stage of the invention or at initial stages of research. At this stage, when it is realized that sufficient information is not available, provisional application filing is explored by inventors. There is a general misconception that one need not provide information that enables the invention, in the provisional application. It should be noted that the requirement of providing adequate information hold good for a provisional application, as it does for a complete patent application. I recommend reading our article “What are the different patent filing options?” to get a better understanding of provisional and complete application.

I would not suggest filing a provisional application, as opposed to a complete application, for the lack of adequate information. Instead, I would suggest filing a provisional application if an inventor does not have adequate funds to hire a professional to draft a patent specification or does not have adequate time to have a complete patent specification drafted. Further, in some countries, there is a substantial difference in the government fee that is charged for a provisional and a complete patent application. Hence, one might wish to file a provisional application, and thereafter within 12 months file a complete patent application.

Another important point to be notes is that, in some countries, such as India, the inventors loose the right to file a patent application if the proposed invention is made public before applying for a patent. On the other hand, US provides a time period of 12 months to file a patent application after the proposed invention is made public. Hence, if the inventor wishes to file patent applications in multiple countries, it is advisable to explore the option of filing the patent application before the invention is made public.

I hope the points discussed in this article will help you in deciding the right time to apply for a patent, given the various constraints you might have.

You may also read our articles listed below, to gain more knowledge about patents:

Patent Office in India publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.
The publication includes published patent applications and granted patents, among other information, for the week of May 06, 2011.
You may go through this publication, and if you find patent information that has an impact on your business, then you may take appropriate actions, such as:

In simple words, “Patent filing” can be defined as a process of submitting an application in a patent office requesting grant of patent to your invention. If you wish to protect your invention in different countries, then you will have to submit a patent application in each of those countries. There are various options or approaches you may use to protect your invention in one or more countries. By understanding the various patent filing options, you can construct a patent filing strategy based on your business objectives and economic constraints. This articles attempts to provide an overview of the patent filing options you can use. (You may be also interested in reading the article “How much does it cost to get a patent in India”)

Please note that, the most important factor in filing a patent application is preparing a patent specification. Drafting a patent specification is a highly skilled job, which can be only preformed by persons who have both techinical as well as patent law expertise. If a person or company is serious about protecting their intellectual property, it is highly recommeded to use the services of professional patent practitioners. To know more about this, you can read our article on this here.

I will attempt to explian the options in a less complex way without trying to be “politically correct”. The options can be broadly divided into 4 classifications:

Filing a provisional patent application

Filing a complete patent application in your country

Filing a patent application in a foreign country

Filing a Patent Cooperation Treaty (PCT) application

1.Filing a provisional patent application

A provisional patent application is filed to secure a priority date for your invention. A priority date is the date on which the first patent application for your invention is filed. This date is important because, knowledge available in public domain before the priority date is referred to as “prior art”, and this prior art is considered by the patent office to decide if a patent has to be granted to your invention. If you delay filing of the patent application, then naturally, more knowledge in the public domain gets added to the prior art, hence decreasing the probability of patent grant to your invention.

Normally, inventors/companies file a provisional application in two scenario. The first scenario is when time is of concern, and drafting a well constructed complete patent specification might delay the patent filing process. This delay in filing, pushes the priority date further, thereby reducing the probability of patent grant to your invention. The second scenario is when money is of concern. Depending on the country in which the patent application is filed, there can be a substantial difference between the provisional and complete application fee that has to be paid to the patent office. Further, depending on the patent consultant you choose to work with, there can be substantial difference in the fee charged by the patent consultant to draft a provisional and a complete specification. Hence, sometimes inventors/companies draft a provisional specification on their own and file the same.

The main difference between a provisional and a complete patent application is, a complete application will have a “claim” section, whereas the claim section will be absent in a provisional application. Claims define the scope of your invention and describes what you wish to protect in your invention.

It shall be noted that, a complete patent application has to be filed within 12 months from the date of filing the provisional application. Failure to do so will be considered as abandoning the provisional application. Once abandoned, the advantages of filing the provisional application cannot be availed.

A complete patent application has to be filed in the patent office of your country if you wish to protect your invention in your country. A complete patent application can be filed in the first place or if you have filed a provisional application provisously, then within 12 months from the provisional application filing date.

A complete patent application in your country can be filed by using any one of the following options:

File a provisional application in any convention country (secure a priority date) and file a complete application in the patent office of your country within 12 months from the priorit date.

File a complete application in any convention country (secure a priority date) and and file a complete application in the patent office of your country within 12 months from the priority date.

Use the PCT route – Explained under option 4

3.Filing a patent application in a foreign country

If you wish to wish to protect your invention in a foreign country, you can choose from one of the options given below:

File a provisional application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priorit date.

File a complete application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priority date.

Use the PCT route – Explained in detail below

4.Filing a Patent Cooperation Treaty (PCT) application

Filing a PCT application is a good strategy if you wish to protect your invention in more number of countries. By filing a PCT application, you get 30 months duration (sometimes even 31 months depending on the country) from the priority date to file patent applications in each country in which you wish to protect your invention. Note that if you had not filed a PCT application, then you would have only 12 months duration from the priority date to file patent applications in each country in which you wish to protect your invention. Another important point to be noted in case of PCT application is that, only comple patent applications are accepted as PCT applications. Further, a PCT application can be filed in the patent office of your country.

A PCT application can be under the following scenarious:

File a provisional application in any PCT member country (secure a priority date) and file a PCT aspplication within 12 months from the priorit date. Subsequently, file patent applications, within 30/31 months from priority date, in each country (has to be a PCT member country, list of PCT contracting countries) you wish to protect your invention.

File a complete application in any PCT member country (secure a priority date) and file a PCT application within 12 months from the priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.

File a PCT application in the first place and secure a priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.

It should be noted the patent filing strategy may be constructed on a case to case basis. The filing strategy may depend on business objectives, market conditions and economic constriants, among other factors.

You may be interested in reading our other related articles listed below:

Understanding the cost structure corresponding to applying for a patent can help in making some important decisions. Hence, instead of having a generic idea about the overall cost, it helps if you are aware of the breakdown of the cost structure and the time of incurring such expenses.

The overall cost of obtaining a patent includes the fee that has to be paid to the patent office (statutory fee) and the fee paid to the patent service provider (professional fee). The professional fee varies based on the service provider you may select. Hence, in this article I will deal only with the statutory fee.

Please note that, the most important factor in filing a patent application is preparing a patent specification. Drafting a patent specification is a highly skilled job, which can be only performed by persons who have both technical as well as patent law expertise. If a person or company is serious about protecting their intellectual property, it is highly recommeded to use the services of professional patent practitioners. To know more about this, you can read our articles on this.

The statutory fee depends on who the applicant of the patent is. The Indian Patent Office (IPO) has categorized the applicants into 4 categories:

Natural person

Startup(s)

Other than natural person – Small Entity

Other than natural person – Others except small Entity

Any individual(s) applying for a patent is considered as a natural person. On the other hand, all other entities that do not fall under the first category, fall under the remaining three categories of :

Other than natural person – Startup

Other than natural person – Small Entity

Other than natural person – Others except small Entity

For example, legal entities, such as, companies would fall under these categories. It shall be noted that, a patent application can have more than one applicant, and even if one of the applicants do not fall under the first category, then the patent application is considered to be filed by applicants of the remaining two categories.

Applicants who are other than natural person are categorized into the below three categories.

Other than natural person – Startup

Other than natural person – Small Entity

Other than natural person – Others except small Entity

The patent office charges the least fee for applicants who are natural persons and Startups.

The patent office also charges the least fee for entities who are startups. Certain conditions have to be met to qualify as startups. You can read more about this in our article.

The patent office charges other than natural person applicants who are a small entity, a fee, which is between a natural person/startup and others except small Entity.The patent office charges a maximum fee for other than natural person applicants who are Others except small Entity/startup.The patent office collects 2 times the fee from the applicants who are "Other than natural person – Others except small Entity" as compared to applicants who are "Other than natural person – Small Entity". Certain conditions have to be met by other than natural person applicants, who wish to claim "Small Entity" status. You can read more about this in our article.

In this article, we will list down the fee applicable to all the categories of applicants. Please note that, the fee mentioned below is for E-filing of applications only. The patent office charges an additonal fee of 10% of the total fee, if filing is done through hardcopies. If the application is not filed online, and is done through hardcopies, you need to calculate the fee, at additional fee of 10% of the total fee.

No

Description

Patent office Fee (INR) 1$ = ~ 60 INR(E-Filing only)

Comments

Other than Natural person

Natural Person/Startup

Small Entity

Other than small entity

1

Application for grant of patent

4000

8000

1600

Mandatory

2

Early publication fee

6250

12500

2500

Optional

3

Request for examination of patent application

10000

20000

4000

Mandatory

4

For every Extra sheet over 30 sheets

400/sheet

800/sheet

160/sheet

Mandatory

5

For every Extra claim over 10 claims

800/claim

1600/claim

320/claim

Mandatory

Sl. No. 1

A fee of INR 1600/4000/8000 has to be paid while submitting the patent application in the IPO, based on the type of applicant.

Sl. No. 2

A fee of INR 2500/6250/12500 has to be paid, based on the type of applicant, if you wish to have your patent application published by the IPO early. If this request is not made, then the IPO publishes your patent application after 18 months from priority date (date on which you first file a patent application for your invention). There are several advantages of having a patent application published early. Some of the advantages are: early publication can help in expediting the patent application examination process and the patent rights start from the date of publication.

Sl. No. 3

A fee of INR 4000/10000/20000 has to be paid, based on the type of applicant, requesting the IPO to examine your patent application. This request for examination can be filed and the fee paid within 48 months from the priority date. However, note that the patent office puts your application in queue for examination only after receiving this fee. Hence, if you want to expedite the patent process, it is advisable to file this request at the earliest. A startup can also request for expedited examination of their patent application. The fee for this is INR 8000. At present, the patent office has limited this request to about 1000 request in a year.

Sl. No. 4

The IPO accepts patent specification, which has up to 30 sheets without charging any extra fee. However, if the specification crosses 30 sheets, then a fee of INR 160/400/800/sheet for each extra sheet has to be paid to the IPO, based on the type of applicant.

Sl. No. 5

Further, the IPO accepts patent specification, which has up to 10 claims (no limitation on independent claims) without charging any extra fee. However, if the specification has more than 10 claims, then a fee of INR 320/800/1600/Claim for each extra claim has to be paid to the IPO, based on the type of applicant.

You may also calculate the patent office fee using our cost calculator below: All fee in USD.

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No. of pages in the specification

The Indian Patent office charges an additional fee for each additional page over 30.

The total number of pages includes description, claims, drawings and sequence listing if any.

The margins requirements are 4 Cms at top, 4 Cms on left, 3 Cms at bottom and 3 Cms on right. Line spacing is 1.5.

No. of claims

The Indian Patent office charges an additional fee for each additional claim over 10 claims.

There is no restriction on the type of claims. The claims can be independent,dependent or multi-dependent. Only additional fee per claim is charged for each additional claim above 10 claims.

No. of priorities claimed

The Indian Patent office charges an additional fee for each additional priority document over 1 priority.

While calculating the number of priorities, PCT application is not considered a priority. If the PCT application itself is the priority application, then it is considered as a priority application.

Request for examination:

The deadline to file an examination request in the Indian Patent office is 48 months from the earliest priority date.

It is however, recommended to file the examination request along with the application, since the application is queued for examination, only upon filing the examination request.

The fee mentioned in this calculator is for the normal examination request. It is recommended to file an express examination request, if the national phase application is filed much earlier than the 31 month deadline. By filing an express examination request, the application is put in queue immediately upon filing the application. If a normal examination request is filed, the application is put in queue for examination
only after 31 months from the priority date.

Applicant type

Any individual(s) applying for a patent is considered as a natural person. To be considered as natural persons, all the applicant(s) should be individuals.

Applicants wishing to claim Start-up Status, need to provide proof of being a Start-up. To know more about this, you can read our article

Applicants wishing to claim Small Entity Status, need to provide proof of being a small entity. To know more about this, you can read our article.

Entities who do not qualify as either individuals or start-ups or small entity, will be considered as large entity

Indian Patent Filing Cost Calculator

No. of pages in the specification:

No. of claims:

No. of priorities claimed:

Request for examination :

Yes

No

Applicant type:

Individuals/Start-up

Small Entity

Large Entity

USD 0

Total Patent office fee :

Get detailed breakdown of cost in 2 minutes !

You may also read our below listed articles to gain more knowledge about the Indian Patenting system:

The concept of patents can be traced back to the 14th century and it has consistently evolved over time. The concept of patents was introduced to encourage innovators by awarding exclusive rights over the improvements in technology made by them. In essence, a patent is a set of exclusive rights granted by a country in exchange for a public disclosure of their invention. The rights granted to a patentee, in most countries, include, the right to exclude others from making, using, selling, importing, offering for sale or distributing the patented invention without permission of the patentee. This set of exclusive rights is granted for a limited period of time, and in most cases the right is limited to 20 years.

The exclusive rights granted to a patentee have business impact, some of which are listed below:

A patentee gets the liberty to enjoy monopoly over the patented invention for 20 years

A patentee can monetize his patented invention by selling or licensing out his rights, in addition to other ways of monetizing

Engineers and scientists can access a rich pool of patent information and improvise on existing technology

Competitors will have to create non-infringing products and processes

The business impact of patents can be used to enhance the competitiveness of a business. A wholesome, systematic and customized approach towards patents is required to use the power of patents to positively impact your business.

One of the approaches for improving competitiveness of a business is by having product differentiators. Product differentiators are brought about by developing products that are technologically superior, has newer/better features or addresses specific needs of customers. Sometimes, there might not be any changes made to the product, however, companies might differentiate themselves from competition by offering products at reduced prices. This might be possible by making changes to the processes used in producing the product. Such modifications made to the products/processes might be patent worthy. Hence, when a company feels that they have made some modification that might be patent worthy, it is important to contemplate the idea of having such improvements protected by a patent.

You may go through our articles to know more about filing patent applications in India and the cost of filing patent applications in India.

It shall be noted that such improvements give added advantages to a business. If a company hasn’t taken any measure to protect the improvement made by them, then competitors might as well copy such improvements, thereby diluting the advantage gained by the business. Further, competitors might copy the products and introduce the same at lower prices, as they would not have invested in developing the product/process. By protecting the improvements made to the products or processes, businesses gain at least the following advantages:

The previous approach dealt with protecting technological improvements made by a company. While, the previous approach dealt with building a patent fortress to safeguard ones business territory, it is equally important to monitor the patent fortress’ built by competitors.

It is often seen that, in a bid to build a patent portfolio that is as strong as possible, companies tend to protect things that already exist and sometime try to protect improvements that are not novel and are obvious. If they do succeed in protecting such existing and obvious technology using patents, then they might stop others from using such technology, or they can at least stop others from using such technology till somebody proves that the patents were wrongly granted.

It is important to take necessary actions to avoid being in a situation in which a company uses patents granted to an existing or obvious improvement to stop you from using such technology. This can be achieved by monitoring and opposing the patent applications filed in the technology that is of your interest

One can monitor patent applications filed by competitors and oppose grant of patent to such patent applications. On the other hand, one can also monitor patents that are getting granted in related technology fields, and opposes the patents even after the patent is granted. By taking such proactive steps, businesses gain at least the following advantages:

Ensure against obvious improvements being protected by competitors

Enhance the valuation of patents held by you in a technology field

Avoid being sued for infringing patents that shouldn’t have been granted in the first place

In the previous two approaches, we dealt with building a patent fortress and ensuring that competitors do not strengthen their patent fortress using minuscule technological improvements. In the current approach we illustrate why it is important to respects others Intellectual Property rights.

As highlighted in the introduction, patents give exclusive rights to the patentee to exclude others from making, using, selling, importing, offering for sale or distributing the patented invention without permission of the patentee. In other words, if you copy, intentionally or otherwise, an invention patented by others, then you will be infringing on their patent right. A patentee can sue you for violating his patent rights, and if the court finds you guilty, then the damages that you might end up paying could be significant. Hence, it is important to be aware of patent rights held by others while carrying out your business.

A well proven approach to ensure that your products or processes don’t infringe on others patent rights is by carrying out a Freedom to Operate (FTO) study before introducing a product in a country. It is important to dig out the patents that exist in the field that you operate in and determine if your products or processes infringe on others patents. If found that the products/processes might infringe on others patent rights, then necessary steps have to be taken to avoid such infringement, and thereby avoid expensive law suits. By taking such precautions you will at least gain the following advantages:

Remember, no one got too far by reinventing the wheel, neither will you; hence, there is no point in reinventing the wheel. It is important to appreciate the fact that most of the problems that we might be trying to solve, might have been solved by somebody else in some part of the world. Therefore, it will be intelligent on your part to look at such solutions and improvise on them. Patent data is considered to be the richest source of scientific information, and using this information is an intelligent approach to product and process development.

By harvesting information provided by patents, you can work on improving solutions provided by others. Hence, the solution provided by you might end up being much more superior and also different. Further, one reduces the possibility on developing something that has already been developed, hence, your investment in R&D yields better returns. Furthermore, one can bring down the cost of developing a product by simply copying a patented invention and introducing the same in a country where the invention has not been patented. Additionally, patent data can be used to analyze technology trends and plan your business accordingly.

The ways in which patent data can be used by businesses is endless, and the advantages gained by using patent data are tremendously valuable. Some of the advantages of using this approach are:

Enhanced returns on investment in R&D

Development of products/processes that have improvised on existing technology

Reduced cost of development of product/process

etter business forecasting and planning

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